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SPQR_451
Interests: patent law, computer technology
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"Examiner for now" writes "As a relatively new examiner, I feel like there is an unwritten rule that everything must be rejected at least once. Even if I were to receive an application tomorrow that disclosed an invention for curing HIV, my SPE would still require a first office rejection." What is perceived as an unwritten rule is, instead, a natural consequence of the combination of new examiner inexperience and all too prevalent overbroad claiming. Please note, I'm not complaining about overbroad claiming, just taking notice that it happens a lot, probably for the reason already mentioned up thread, that the applicant doesn't really want to leave anything on the table. As proof of the examiner's level of inexperience note how his (no offense intended) complaint is worded, "Even if I were to receive an application tomorrow that disclosed an invention for curing HIV, my SPE would still require a first office rejection." and realize that he said "a disclosed invention," not a claimed invention. As a primary reviewing Jrs work, I often find it necessary to drill into them the necessity to try to identify patentable subject matter at an early stage and inform the applicant. This teaching does seem to be missing from the Academy, at least in the Jrs I have experience with. But keep in mind that it takes a certain amount of time (at least a year in the art unit) for them to learn the art well-enough to begin to know what is and is not "new and un-obvious" in the prior art and why. Unfortunately, they do not come out of the Academy prepared to do this job without a lot of additional training, and by that I mean reading a lot of applications and references to learn the art. So, it is not reasonable to expect a Jr with less than 2-1/2 years of experience in our art to be knowledgeable enough to know what is and is not patentable subject matter. Most applications in our art have at least some claims with serious 112/1 enablement, scope-of-enablement, and sometimes written description problems, as well as 112/2 problems. This is not to be unexpected, after all, it is simply difficult to write claims that do not have problems. Writing claims is an art, and writing good claims requires experience and skill, but some claims are written by newly minted patent attorneys without practical experience.
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Addressing the question of whether or not a computer+software=new machine. A computer (by design) inherently encompasses a finite set of states (immensely vast) each one of which represents a unique arrangement of the contents of the computer's main memory. When any program is run on the computer, useful or not, the computer can only enter one or more of the range of states already inherently designed into the machine. So, no, the computer never becomes a new machine no matter what program is being run on it. The so-called transformations (argued above) that the computer experiences are nothing more than certain sets of inherent states that are made possible by the original design of the computer. And based on the premise that the machine is programmable to reach each of the vast range of inherent states of which the computer was designed to perform as it's original specification. Stated another way, the physical computer programmed with software "A" is the exact same physical computer as that computer programmed with software "B" because the physical computer inherently can be programmed into all possible states reachable by it's design parameters, i.e., the size and extent and arrangement of it's main memory. The so-called "transformation" that non-computer engineers see is a mis-understanding of the inherent nature of the programmable computer. This does not mean that no computer is patentable under 101. A new computer having a new physical processor, or a new physical memory can be a new machine that is statutory under 101 based on new physical features of the new programable computer. But, every new computer inherently is designed to be programmed to the full extent of it's design capacity based on the designer's goals. However, this programmable capability does not turn the machine into a new machine simply because a user wrote some software it was designed to be able to run. Enough of this transformation malarky, please.
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To: just passing through @ 11:23am Your question and observations were not really the point of my post, but I don't want to make anything worse. So, I think I can help explain a few things. First, I have 17+ years at the Office and in all that time I have never known management to willfully lie about anything. About outright lying, I don't think it's in their power to do that, but I do think they can and do lie by omission. It's pretty common, in fact, as a parent I admit to having done that too. And, I think they do that for the same reason I did, to try and make things better, not worse. In the excerpt above, the examiners they are referring-to are not all examiners, but only the examiners that they know by PALM are having too many RCEs, so the intention is to fix that by dealing with multiple, generational, RCEs by giving progressively fewer counts for the first and then the second RCE, and then all RCEs beyond the second are capped at the lower count reward value of second RCEs. The comment in the FAQ was not meant for, or directed to, all the other examiners outside this group. I guess the point is that, in order to understand the "why" of this proposal, you have to look at the plan like management does. I admit I don't understand the why of this plan, a lot doesn't make sense to me, but I think that is by design, after all, I only have a small portion of what can be known. Management has the most information, everyone else has a lot less. So, think about it, management had to have a plan that addresses multiple competing interests, and to try and do that in as fair a way as possible. That's the crux, how to be fair. And, as an examiner, I know that "fair" is a subjective term. It really isn't possible to be fair to everyone, since no one will, or can, agree on what is fair. The plan has to be perceived as, at least, an attempt at fairness, or else it doesn't have a chance of being adopted. I think that in the beginning, management understood that for the plan to succeed everybody has to hurt a little so everybody can gain a little, and thereby, move the whole count system off dead center, to a place where, eventually, more change is possible. In this equation only management knows enough to make this fair, if fair is possible. Unfortunately, and probably inevitably, the position we the examiners are in is that we have to trust management in this. They are driving the bus, and we can apply the brakes. We probably make them more nervous than they make us. They need us to stay off the brake for this to succeed. As for myself, I only trust them to do what's best for management, and additionally, I hope they're doing what's best for themselves in the long term. I think that's the best shot we the examiners have, that management understands they will stand or fall on how the plan plays out over the long term. If the plan is adopted, and then if it eventually fails, i.e., lower productivity and more senior examiners leave early, (upper) management stands to lose the most, their jobs, because Congress can insist on that, that's ultimately who management answers to. I'll still have a job, if I want it under the new system. I get to choose to stay, management won't get to choose. You didn't ask for this explanation, but this is my interpretation for what it's worth, and no, I don't think there is anything rotten in this, just competing interests working themselves out. Thanks for the comment.
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From the online document "Proposed Count System Package - FAQ's" Question 16 is... "16) Why does the proposed count system reward more time to those with higher RCE percents than examiners who exercise compact prosecution (and thus have a lower percentage of RCEs)? (Management's answer) There are multiple reasons why an RCE is filed, and many of these are solely due to applicant behavior. The RCE adjustment is not a rewarding of more time. It is an adjustment to mitigate the impact of the reduced RCE counts." Finally, proof that PTO management believes "RCE Churning" isn't all about victimizing the poor attorney.
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Update -- from the Memorandum of Agreement: "Item 8.G. - Transition Issues Pending applications for which FAOM credit was received uner the previous count system will have 0.75 counts available, even if a final rejection has been issued under the previous count system." This provision cheats me out of 4 counts for no good reason, I have 16 cases in this status at the present time. If the Office wanted to be fair about this, they could give me an extra 0.25 counts for every case in this status, and then I wouldn't mind only getting 0.75 for the disposal. It's a simple accounting procedure, PALM has all the data. It's simply a "gift" of 0.25 counts to the Office for every case in this status from every examiner. This is unacceptable. I won't be voting for the proposal for this reason alone.
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A First look, Page 4 of the proposal adds 2 hours of examining time equally across-the board to all utility examiner's Hrs/BD (BD=Balanced Disposal, = 2, 1 for FAOM + 1 for Abandonment or Allowance) at their position factor (position factor = adjustment to Hrs/BD to account for experience level, e.g., GS-14 Primaries get less time for examination than GS-12 Examiners, this is the system and it is fair and appropriate). Analysis: The across-the-board feature of adding an equal 2 Hrs is unfair because it contradicts the founding premise of the present Hrs/BD and count system, because it gives proportionally more time to arts that are simpler to examine. For example, In a hypothetical relatively simpler Art Unit where the Hrs/BD = 12 for a GS-12 examiner, the extra 2 hours represents a 16.7% increase in examining time. In another, relatively more complex Art Unit where the Hrs/BD = 31.5 for a GS-12 examiner, the extra 2 hours represents only a 6.4% increase in examining time. The simpler art gets almost 3 times the extra time than a complex art !!! Does this seem backwards to you? The existing differences in Hrs/BD in the present system are based on the premise, and fact, that some arts are simpler to examine, and some are more complex. The present proposal ignores this basic difference. It is patently unfair (no pun intended) to reward examination of simple art at the expense of complex art, but this is how this feature of the proposal will be viewed by the patenting corps. So, as a Primary in a complex art I will not support this feature of the proposal. In fact, even if I were a Primary in a simple art I still wouldn't support the proposal because it is inherently unfair, and would decrease morale instead of improving it. Here's why I believe we need a re-examination of the production Hrs/BD across the corps for all art areas. Since the time software was re-appraised and then considered to be necessary or worthy of patent protection, this change threw a monkey-wrench into our workload (added complexity) in the following ways: The applicant is claiming software based strictly on the software's functionality, e.g., a module for accomplishing x, where sometimes "x" is a simple function and sometimes "x" is a very complex function. In the hardware realm, apparatus that was capable of performing function "x" was made-up of standard components, e.g., flip-flops, registers, logic gates, etc., which were relatively easy to search for because these components had industry standard names and symbols so they could be located in a search in the text of a reference or found in the drawings of a reference. This is not true of a software module which has an arbitrary name in the specification and if it does appear in the drawings, it will appear simply as a labeled box. Now, applicant can call his software module anything he likes, there isn't any industry standard for naming software modules, so that a detailed search based on the functional description likely won't find the claimed module. The prior art patents don't describe software modules very much at all, and one box pretty much looks like another. Oh, to be sure there are limited exceptions, for instance a device driver, but the applicant doesn't have to call his new software module a device driver, he can call it by any name he likes. So, my question to you is, how do you search the prior art for a specific software module whose only defining characteristic is that it performs function "x"? The answer is that you can't. Now, as an examiner, I do not object to examining software based patents. I will gladly examine whatever the Office says to examine. I'm simply saying that in my experience the tools we have do not permit us to effectively search the prior art for most of the software that's being claimed, and even if we think we've found it, the mapping usually isn't very good (not like with hardware) so it's difficult to convince the attorney that we've found it. And, I believe this fact has contributed to the public perception that we are allowing bad patents. Additionally, I don't have an answer to this basic problem, I wish I did. But, I don't see in any of the patent blogs I regularly read any instance of this fundamental problem being mentioned. Back to the proposal, I think we need a re-appraisal of the amount of examining time each art area should have based on the actual complexity of art being filed and capability of tools to deal with that art. One more thing, I examined in the Office before computers were given to us, and it is admittedly true that we have had a significant productivity boost due to the introduction of computers for searching, reading, and writing cases. But, I also believe the resulting productivity boost does not come close to balancing the increased complexity of examination, because the Office has consistently increased the work burden for each office action over time. I'm not saying that's a bad thing, I'm saying the examination burden has increased, and not by a little. Maybe this is one reason why RCE churning is happening, to whatever extent it is happening. That's my sincere conviction, your mileage may vary.
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