Ok, so…

I’m a liar.  I didn’t go back and edit yesterday’s post, yet.  I still plan on commenting on the material this weekend.

Today was… interestingly structured.  Since we had so many lectures yesterday, we had three quizzes. But a quiz comprises 30 minutes to an hour of review, thirty minutes of quiz time, and thirty minutes of review time.  So lots of time allocated to quizzes.

We also looked at classification insight, which is just a tool for navigating all the classes and subclasses that patents can be filed into.


“What does ‘means’ mean?”

Four lectures today: 112, 6th paragraph, introduction to prior art, classification, and the application filing process.

35 USC 112, 6th paragraph covers the language used for “means-for” and “step by” claims, and how those are handled when we come across them.

The introduction to prior art was really just an introduction to 102 and 103 issues.  That is, finding art that applies to the whole or part of a claim and/or finding obvious combinations of art.

Classification was just an overview of how classes and subclasses are laid out, so we have an idea how to classify allowances that we’ll (one day) make.

Application filing dealt with some of the details of how applications have to be filed (150 words maximum for the abstract, filed in English or a foreign language if certain conditions are met, etc).

A new group of cadets (are we cadets? academy-goers? novices?) started yesterday, and are going to have their first interview with an attorney tomorrow.

So, new junior examiners, by week three you will have covered: 101, 112 1st, 2nd, and 6th, and begun to learn about 102 and 103.  All those mysteries from the first two days will be revealed to you in all their glory! Well, maybe not.  But take heart, the statutes will start to make more sense soon.

Note: I am exhausted, so I will fill in details tomorrow.


“By metes and bounds…”

We had two lectures today.  One was on 112, 2nd paragraph, and the other was the second part of claim interpretation.

112, 2nd rejections are only to be applied when claims are unclear to such an extent that the examiner cannot make sense of them.

It seems like a lot of people are having trouble figuring out why one would use an objection as opposed to a rejection.  It was easy when the explanation was “Object to problems in the specification (or elsewhere), reject claims.” But as always, it isn’t that simple as we dig further into things.  So, if I have a claim that I can reasonably reject on 112, 2nd grounds, or I can object to the claim, which should I do?  What is the practical consequence?  One way to look at it is to ask how applicant might challenge the decision:  rejections can be appealed, objections are petitioned.  I don’t think that means very much to novice examiners – petition vs. appeal really doesn’t change the game for us much at this point.

An interesting perspective about when to object/reject on 112, 2nd grounds:  If you can reasonably figure out what applicant meant, or how to fix the claim to make it “right,” just make an objection.  If you can’t figure out what the heck is being claimed, make a rejection.   It may be similar to raising the “high priority” flag on an email; it’s supposed to be stronger when you reject as opposed to when you object.  Or perhaps by stating an objection, what you’re really saying is that the problem is not itself material to patentability; a rejection raises that doubt.

The lecturer seemed uncannily prepared for us to falsely associate 112, 2nd with “breadth” as opposed to “clarity.”  When all you have is a hammer, and every problem starts to seem like a nail.  Since we really haven’t done any direct work with 102 or 103, I think many of us find ourselves looking over the exercises and saying “That’s not patentable, and I’m going to find a reason why!”  So we (incorrectly) attempt to apply 101, 112, or whatever bit of terminology we learned that day.  It’s part of the process.   I should say that I don’t think there’s a knee-jerk rejection reflex going on, it’s just that many of the exercises we are given have very, very broad claims that would probably be easily addressed with a prior art search.  Lacking that capacity, we come up with all kinds of crazy things.

We also learned about  product-by-process claims and some of the court decisions that have shaped that jurisprudence.  Just a quick rundown: a product by process claim is really a claim to the product produced by the process.  As such, if some other art shows an identical or obvious variant of applicant’s product, the claim must be rejected… even if the process is entirely different.  Unless, of course, there is a substantial structural difference between the products created through the different processes.

That’s not to say that applicant can’t claim the process for creating the product, if the process is itself novel and non-obvious.

I think we have four lectures tomorrow… so it is time to cut this post “short.”


“So you claim…”

Claim interpretation!

The infamous “the applicant can be his own lexicographer” line!

Limiting and non-limiting claim preambles!  How you determine the meaning of every single last word in a claim!

Actually, pretty interesting stuff. One thing some people had trouble with was understanding what, exactly, the preamble might be limiting.  The answer, I think, is simply “the claim.”  If the preamble is non-limiting, then you don’t have to use the anticipated application (or other description) in your prior art search.  You don’t have to worry about it in terms of it changing the scope of the claim.  If it is limiting, then you do have to consider those things.  Not that it is that simple, but at least it’s a start.

We had a very entertaining presentation on Harassment.  No need to go into it.

We  had a presentation on “wellness” (part of the “soft-skills” curriculum) and dress at the office.  Now, as of this writing, there is no official USPTO dress code.  Our presenter was kind enough to point this out at the beginning.  So I’m not sure why, exactly, they decided it would be a good idea to give us strong suggestions about what to wear/not wear.  I suppose it is a reasonable aspect of professional development… but confusing if you had earlier understood the dress-standards to be somewhat different.

Anyway, it looks like things are going to start to ramp up this coming week.  I’m looking forward to it!


Community Day

Today was “community day.”

Not much to say about that.

We learned about the PAP (Performance Appraisal (I think) Plan). Basically our intro to the critical factors of Patent Examining, Production, and Workflow.

If anyone ever reads this and is considering becoming an examiner, you should know that you aren’t on production for the first year. But you are, because production is used to determine promotion. And, if you’re really not cutting production for your GS level by the end of the year… well, you can fill in the blank, there. That wasn’t mentioned in the presentation at all, but that is just what I have gathered.


“What a bunch of enablers…”

Before starting: I feel compelled to point out once again that I am not reproducing PTO materials in any way… I am summarizing my own rough understanding of the statute, whether right or wrong. I am not a lawyer.

Day 7:

Yes, we worked with the electronic MPEP today.

Yes, we futzed around with the intranet resources.

But the highlight of today was our lecture on 35 USC 112, paragraph 1. There was a lot of material today, and I’m not even going to try to summarize it all, but we did learn a lot of very interesting things.

There are three aspects to 112, p1 that we have to worry about:

1. Written Description

2. Enablement

3. Best mode

Applicant must provide a written description of the invention – that should be obvious. Like I said in a previous post about quid pro quo, if you don’t disclose the invention such that a person of ordinary skill in the art can make and use your invention, you aren’t fulfilling your part of the bargain. But written description is a really low bar to meet.

The next item is enablement… does the specification provide adequate information for the PHOSITA to understand what is claimed? Is everything in the claim defined in the spec, or is it understood in the art?

Finally, best mode. Has applicant disclosed the best way to build or use the invention that they knew of at the time of filing? Not a likely rejection.

One thing I found very interesting about enablement is that it is a very severe rejection. Rejecting on enablement can put a death sentence on an application on the first office action, because if applicant can’t prove that his spec was adequate, he is barred from introducing new matter into the description. Since he can’t fix the non-enabled claims, he has to file a CIP (I think) and go from there, which is costly.

After doing a few exercises on what is an allowable amendment under 112, p1 and going over the intricacies of it, I really understand why some people stay at the PTO for years and maintain enthusiasm for the job. This is work that really engages your whole mind, and challenges you to really think about things. I’m still going over 112, p1 in my head, so I’ll probably post some more about it later.


“The Name of the Game…”

Is in the claims!

Yes, we had that famous lecture today.  It was pretty entertaining, although I did feel like I should have run out of the auditorium pumping my fists, Tony Robbins-style.

I almost entitled this post “Do you understand the words that are coming out of my mouth?”  Because really, that’s what it boils down to – do you understand the specification? Do you understand what the invention is supposed to be?  Do you understand what all the words themselves mean, and are you sure that there’s no other way that they can be understood?  Do you understand the claims?  Do the claims make sense in light of the spec?

I actually got into a discussion with another junior examiner the other day about how well we have to understand the invention.  He seemed to think that you really “only” need to understand the invention sufficiently to find prior art.  But how can you find prior art if you don’t understand the invention well?  Maybe I’m wrong, but the goal shouldn’t be to issue a rejection based on any old prior art that is half-way related.   The goal is to find good prior art that reads on the claims, find some other objection or rejections if there are any, or allow the claims if they are allowable.  But you just can’t make that determination unless you’ve really invested some time and thought into understanding the document in front of you.

We also took a look at some of the automation tools, including the form paragraphs tool and our electronic docket system.  We only did some very, very basic stuff with it.  They want us to get little pieces of all the tools at first, so we get used to them, and then give us more complete guidance later.


“101, remedial” or “What do you expect?”

Today was a pretty relaxed day. We had a lot of talk about “expectations,” in terms of what the trainers, SPEs, technical directors, and our fellow lab mates expect of us. To be honest, most of the expectations were really just advice, like “ask questions.” In other words, nothing you’d be fired for or reprimanded for – if you don’t ask questions but do your job well, is anyone really going to care?

We switch over to the 9-80 schedule next week. For anyone who doesn’t know, that means working 8 nine hour days and one eight hour day per bi-week, with one of the Fridays off. Definitely not a bad deal.

We had our first lecture on 35 USC 101 today. I thought it was fairly interesting. Here are the highlights:

What is patentable under 101?

Any new and useful process, material composition, machine, manufacture, or improvement.

So when doing a 101 check, how do you ascertain that the application meets the requirements? Well, you go through it claim by claim, and check which type of patentable invention it might be. If the claim says “a method to,” it is probably a process. If it says “a system comprising,” it is probably a machine. If it says “a product” it is probably an article of manufacture. We didn’t see any material composition examples, so I can’t speak to that one.

Next, we get back to the whole “new and useful” thing that fouled so many people up before. Well, we pretty much ignored the “new” part of it, since novelty is covered under 102. Instead, we talked about utility.

How do you ascertain utility?

The utility of the machine must be specific, substantial, and credible.

So what does this mean? “Specific” means specific to the class. You can’t claim a new widget  whose only usefulness is to do exactly what other widgets do. Not that you can’t claim a new widget that does the same thing faster, say, than existing widgets. Or that has some other benefit. But you can’t say the invention is useful because it does what every other invention in its class does, unless you are improving upon that result somehow.

Substantial means that the invention has a “real-world” use. Gosh, that’s vague, isn’t it? It seems that this restriction is there to prevent inventors from coming up with a widget that doesn’t have any specific application yet, but might eventually have an application after further research is done.

Credible is easy. No violations of the laws of nature. I imagine that if you’re clever enough to break a law of nature, presenting a working model of your invention would secure you the patent – and invalidate a “law of nature” in the process.

We also covered judicial exceptions, but I don’t really feel like going into it right now… this has been a long enough post as it is.


Quid Pro Quo

I’m just going to comment on one of the things related to yesterday’s intro to intellectual property and patents.

One point that came up was that one of the benefits of having a patent system is quid pro quo. That is, we the people grant you the inventor exclusive rights to the production and use of your invention in return for the knowledge of how to construct it. We get the knowledge, you get a temporary monopoly.

This got me thinking – isn’t it the same way with copyrights? Or rather, shouldn’t it be? Look at Disney – and this is a tired argument, but I’ll repeat it – who has certainly profited from taking from the public domain (Cinderella, Sleeping Beauty, Snow White) but who lobbies Congress to continually extend the limits of copyright so that they never have to release anything to the public. Of course, no one can use their creations to create secondary works derived from same, which means that they are essentially being granted a monopoly on their creation forever. The sad thing is that it is easy to understand why patents should be term limited, but people don’t seem to feel the same way about copyrights. Is it because of some prejudice against scientific advance, or is it because people use inventions and feel strongly enough about their usefulness that they would not tolerate such an infinite extension of the monopoly?


What does “new” mean?

Day 4:
We did some skits today, which were intended to express our thoughts and feelings about our experiences thus far at the PTO, especially the interview.

Surprisingly, all of the presentations were clever and funny. One gag that I thought was especially funny was a depiction of one of the labs attempting to understand 35 USC 101.

For those of you that don’t know, 101 lays out the conditions for patentability. It’s really a low bar to meet, as it just defines what sorts of things are patentable. But for novice examiners who don’t understand that we have to consider court rulings and precedent in addition to the simple text of the statute, it becomes a real point of contention.

Specifically, 101 says that an invention must be “new and useful.” If you try to interpret that phrase literally, you’ll end up rejecting a claim under 101 that should’ve been rejected under 102 as prior art. People see the word “new,” and they see the world “novel.” They have decent vocabularies. “New means novel,” they say. Well, not really.

Keep in mind that for our first examination we were not allowed to ask our trainers for help (as I mentioned in a previous post). This meant that people with some prior experience in patent law (or who had done some background reading) ended up teaching the people who had none. This group put it as “they taught us… like kindergarteners.” Here’s a bit of what I remember from the sketch:

Person with some prior knowledge: Can anyone tell me what “new” means?

Girl1: You mean you want us to tell you what “new” means?

Girl2: -raises her hand- Ooh! Babies are new!

Boy1: Can you patent a baby?

There were also some hilarious bits poking fun at the attorneys that came in to do “interviews” with us, as well as some jabs at the amount of paperwork we had to fill out on the first day.

The “MC” of the event was a very, very funny guy who regaled us all with jokes, impressions, and a lot of energy and enthusiasm.

My impression is that this first week was really designed to help us adjust to the temperature of the water. There are people in the class who I don’t think expected to have to understand legalese; they’re engineers for chrissakes! I can imagine that throwing everyone into examining in the first week would kill morale. Also, the PTO is hiring 1200 people a year, now. They just can’t do intense, one on one training for two weeks like they used to. At the same time, moving everything into lectures and labs could dehumanize the experience. My guess, and it is only a guess, is that the people who came up with the patent training academy took a look at the demographic they were most likely to recruit – younger people either straight out of college or only a few years out – and decided that they were going to make the transition as painless as possible. Start out with “teambuilding” exercises like you did every fall in the dorms, work your way into lectures and slowly introduce actual work.

We had our introduction to the internal academy web site, which allows us to track our schedules and progress. We can print out PowerPoint slides for the lectures. That sort of thing.

We also had our first real lecture on the basics of the patent system. Nothing revolutionary, of course… the basics like types of patents (Utility, Design, Plants), brief mentions of 37 CFR, 101, 102, 103, 112, etc. Again, it was just an intro lecture, so we didn’t go into any great detail. Our speaker had a few interesting points I’ll try to comment on this weekend, if I have time.