just_n_examiner ([info]just_n_examiner) wrote,
@ 2007-10-16 20:47:00
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Status 32
As has been noted on Patently-O and also in comments here, the Office has flagged all pending applications which do not comply with the new 5/25 claim limits [and put into status 32].

They were removed today from examiner's dockets so that notices to that effect could be sent to the applicants.

From what I've been told, once an application has been amended to comply with the claim limit requirements, it will be returned to the same examiner's docket from which it was removed.

For all the talk that the Office should have waited until November 1st to do this, I doubt that it really makes a whole lot of difference. Does anyone think that there would have been a whole lot of examiners writing actions on these applications over the next two weeks, when they could simply put those applications on the shelf, work on amendments for a couple of weeks and end up with fewer claims to examine?

I understand how sleazy that sounds, but under the production system, I doubt that there are many examiners looking for extra work to do, and that's exactly what it would amount to.


(Post a new comment)


(Anonymous)
2007-10-17 02:56 am UTC (link)
I actually had an examiner promise to get me an action on such a case before Nov. 1. (The promise was unsolicited - I had just called him last month to ask whether he thought he might get to it before then, because it might affect my prosecution of a related case.) I know such promises are non-binding anyway, but I'm curious what will happen to my case.

(Reply to this)


[info]dixiediva82
2007-10-17 03:36 am UTC (link)
I have been avoiding picking up ANY new cases with more than 25 claims since the start of this past summer, unless I was required to pick it up and complete a FAOM because of a date goal given to our Art Unit for the end of Quarter 3 of FY2007 and the end of Quarter 4 FY2007. So, since July I've worked on about 5/6 "new" cases that didn't met the 5/25 claim rule and I only worked on them because I had to because my boss told me I had to. Oh and in total, I've probably worked on about 15 "new" cases in the past 6 months.

I have plenty of work to do with my Amended cases alone and can usually get my production completed for two-three consequtive biweeks just by working off of Amendments and RCE's (true abandonments, what are those?). This is the norm at the USPTO, especially with the majority of Examiner's who have well-established pipelines. I don't think this concept of Examiner's workflow is well understood outside of the Office ... maybe more blogs like this could help with that.

And as you say, why anybody would do extra work out of "the goodness of their over-worked hearts" beats the heck out of me, too.

(Reply to this) (Thread)


[info]dixiediva82
2007-10-17 03:38 am UTC (link)
And sorry for the typos, my pto-issued laptop has some keyboard issues and I haven't had time to deal with the IT people to get it fixed -- tooo bussssyyyy!!!

(Reply to this) (Parent)

Sleazy put-off logic
(Anonymous)
2007-10-17 03:42 am UTC (link)
It not only "sounds" sleazy.
It is sleazy.

Given that valid lawsuits (i.e. GSK v Dudas) have been filed against the PTO, why does the PTO not, under the same logic, put off enforcement of the questionable new rules until their validity under law has been resolved?

(Reply to this) (Thread)

Re: Sleazy put-off logic
[info]roh_wyn
2007-10-17 04:03 am UTC (link)
GSK v. Dudas promises to be a very interesting case, especially as it should be very easy for GSK to demonsrate that it is retroactively injured by the application of the rules, i.e. there should be no problem with standing.

On the other hand, I don't see why the PTO would bother NOT implementing the rules until a decision comes down. During the comment period, the issue of the PTO's lack of authority to promulgate substantive rules came up repeatedly, but the PTO issued the new rules anyway. I can't decide if this is just the agency being shortsighted or arrogant. The PTO may also be hoping that Congress steps in prior to any court decision on the rules and gives the PTO the necessary authority.

(Reply to this) (Parent)(Thread)(Expand)

(no subject) - [info]judith_s, 2007-10-17 05:02 am UTC (Expand)
Sleazy is as Sleazy does - (Anonymous), 2007-10-17 09:08 am UTC (Expand)
Re: Sleazy is as Sleazy does (fourthly) - (Anonymous), 2007-10-17 09:15 am UTC (Expand)
Re: Sleazy is as Sleazy does (fourthly) - (Anonymous), 2007-10-17 12:14 pm UTC (Expand)
Re: Sleazy is as Sleazy does - (Anonymous), 2007-10-17 01:11 pm UTC (Expand)
Re: Sleazy is as Sleazy does - [info]dixiediva82, 2007-10-17 03:49 pm UTC (Expand)
Re: Sleazy is as Sleazy does - [info]just_n_examiner, 2007-10-20 04:12 pm UTC (Expand)

(Deleted post)
Re: Sleazy put-off logic - [info]roh_wyn, 2007-10-17 03:51 pm UTC (Expand)
(no subject) - [info]enikoxohaq, 2008-07-11 06:04 am UTC (Expand)
Re: Sleazy put-off logic
(Anonymous)
2007-10-17 07:44 pm UTC (link)
You know what else is sleazy? Giving us 300-500 claims. Of the new 6 cases just pulled from my docket 3 of them fell into this range.

(Reply to this) (Parent)(Thread)(Expand)

Re: Sleazy put-off logic - [info]humbleagent, 2007-10-17 08:17 pm UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-17 10:45 pm UTC (Expand)
Re: Sleazy put-off logic - [info]humbleagent, 2007-10-17 11:15 pm UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-17 11:41 pm UTC (Expand)
Re: Sleazy put-off logic - [info]dixiediva82, 2007-10-19 03:39 am UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-19 04:05 pm UTC (Expand)

(Deleted post)
Re: Sleazy put-off logic - (Anonymous), 2007-10-17 10:42 pm UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-17 11:17 pm UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-17 11:45 pm UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-17 11:56 pm UTC (Expand)
Re: Sleazy put-off logic - [info]humbleagent, 2007-10-17 11:20 pm UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-17 11:54 pm UTC (Expand)
Re: Sleazy put-off logic - [info]humbleagent, 2007-10-18 02:12 am UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-18 12:23 pm UTC (Expand)
Re: Sleazy put-off logic - [info]humbleagent, 2007-10-18 12:37 pm UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-18 01:16 pm UTC (Expand)
Re: Sleazy put-off logic - [info]just_n_examiner, 2007-10-18 02:46 am UTC (Expand)
Re: Sleazy put-off about all-knowing applicants - (Anonymous), 2007-10-18 04:53 am UTC (Expand)
Re: Sleazy put-off about all-knowing applicants - (Anonymous), 2007-10-18 12:17 pm UTC (Expand)
Re: All-knowing participants in a complex process - (Anonymous), 2007-10-18 09:42 pm UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-18 01:11 pm UTC (Expand)
Re: Sleazy put-off logic - [info]just_n_examiner, 2007-10-17 11:48 pm UTC (Expand)
Re: Sleazy put-off logic - (Anonymous), 2007-10-20 07:08 pm UTC (Expand)
37 CFR 1.75(b) shows that yes, 300+ claims is sleazy - [info]dixiediva82, 2007-10-19 04:04 am UTC (Expand)
Re: 37 CFR 1.75(b) shows that yes, 300+ claims is sleazy - [info]humbleagent, 2007-10-19 11:56 am UTC (Expand)
Re: 37 CFR 1.75(b) shows that yes, 300+ claims is sleazy - [info]dixiediva82, 2007-10-19 01:36 pm UTC (Expand)
Re: 37 CFR 1.75(b) shows that yes, 300+ claims is sleazy - (Anonymous), 2007-10-19 02:05 pm UTC (Expand)
Re: 37 CFR 1.75(b) shows that yes, 300+ claims is sleazy - [info]humbleagent, 2007-10-19 02:37 pm UTC (Expand)

(Deleted post)
Re: 37 CFR 1.75(b) shows that yes, 300+ claims is sleazy - [info]dixiediva82, 2007-10-19 06:23 pm UTC (Expand)
Re: 37 CFR 1.75(b) shows that yes, 300+ claims is sleazy - [info]dixiediva82, 2007-10-19 06:48 pm UTC (Expand)
Above comment refers to 37 CFR 1.75(b) pre-rule change
[info]dixiediva82
2007-10-19 04:07 am UTC (link)
for clarification

(Reply to this) (Parent)

I just issued the first action on a 34 claim'er
(Anonymous)
2007-10-17 12:40 pm UTC (link)
Although some might find it interesting or fun living during the end of an empire. . . I don't. Nor do I want to look in the mirror and "see" where I've contributed to its demise.

Are my lowly, single-handed actions going to stem the tide, no.

But. . . you've got to be the change you'd want to see in the world otherwise you're assured of NEVER seeing things change in the way you'd hope.

Yea, I may be a fool, and I won't be a big winner in any of the games people play. . . but I really like who I am even if I don't quite fit with the way things are done.

I don't care that everybody else is doing "it" or that someone else did "it" first.

~I'm going to continue to do the best I can.

(Reply to this) (Thread)

Re: I just issued the first action on a 34 claim'er
[info]just_n_examiner
2007-10-18 02:57 am UTC (link)
I admire your dedication, really.

I also try to do the job in such a way that I can take pride in doing it the way it should be done. I make sure that my searches are thorough enough that I'm comfortable with the rejections that I make, that my finals are good enough to send to the Board if need be, and that when I allow an application, I'm confident enough that I can defend it to OPQA if necessary.

I can only continue to do this, however, if I manage to maintain my production numbers sufficient to keep the job.

(Reply to this) (Parent)(Thread)(Expand)

Re: I just issued the first action on a 34 claim'er - (Anonymous), 2007-10-18 10:31 am UTC (Expand)
It's not a matter of "Dedication" but rather - (Anonymous), 2007-10-18 12:28 pm UTC (Expand)

(Anonymous)
2007-10-17 01:13 pm UTC (link)
So I was working on a case and it disappeared from my docket... yet when I pull it up manually in eDAN it shows as still status 30, ready for examination... Should I continue to examine this case, or will I likely not get credit for it and should move on to something else?

-MM

(Reply to this) (Thread)


(Anonymous)
2007-10-17 01:45 pm UTC (link)
Talk to your SPE & let them know what happened. In the meantime work on something else. There are always more cases to work on.

thanks,

LL

(Reply to this) (Parent)


(Anonymous)
2007-10-18 12:10 am UTC (link)
MM:

Why are you asking this here?

Is it because some SPEs are worthless, and not available for their supervisory duties?????

(Reply to this) (Parent)


(Anonymous)
2007-10-17 02:35 pm UTC (link)
does anybody know if we get our cases back?

(Reply to this) (Thread)


(Anonymous)
2007-10-17 02:40 pm UTC (link)
I've heard that we should... but everything I'm hearing (even my knowledge of where the heck the cases went) is coming from Patently-O right now... shows how good the communication is here; I guess we didn't "need to know"

-MM

(Reply to this) (Parent)(Thread)(Expand)

(no subject) - [info]dixiediva82, 2007-10-17 03:53 pm UTC (Expand)
(no subject) - (Anonymous), 2007-10-17 03:59 pm UTC (Expand)
(no subject) - (Anonymous), 2007-10-17 05:35 pm UTC (Expand)
we do get the cases back - (Anonymous), 2007-10-17 07:43 pm UTC (Expand)
Two questions...
(Anonymous)
2007-10-17 07:28 pm UTC (link)
1. Is the PTO planning on sending out a flurry of "does not comply with 37 CFR 1.75(b)" letters on Nov 1?

2. Will the (now former?) examiners of record get the abandonments should the appropriate measures not be done w/in the two months?

(Reply to this) (Thread)

Re: Two questions...
(Anonymous)
2007-10-17 07:40 pm UTC (link)
1. Yes. It will start on Nov 1st. However, we haven't been told this officially, As you can see from the other posts, management doesn't exactly communicate well with examiners.

2. Not likely. Even though the cases are still docketed to the same examiner, the change in the status code will likley have the same effect of sending the case back to preexam. I've asked around about this and although no one has been able to give me a direct answer one way or the other, the consensus seems to be no. If the examiner hasn't done any work on the case (i.e. no restriction and no office action) it is unlikely they will get the count.

POPA should be screaming about this but...where are they?

(Reply to this) (Parent)(Thread)(Expand)

Re: Two questions... - (Anonymous), 2007-10-17 07:58 pm UTC (Expand)
Re: Two questions... - (Anonymous), 2007-10-17 08:06 pm UTC (Expand)
Re: Two questions... - (Anonymous), 2007-10-18 12:32 am UTC (Expand)
Re: Two questions... - [info]just_n_examiner, 2007-10-20 04:29 pm UTC (Expand)
Re: Two questions...
(Anonymous)
2007-10-17 08:19 pm UTC (link)
A GSK update from Patentably-O:

Finally, earlier today, the District Court in Alexandria, Virginia, affirmed that the preliminary injunction hearing on GlaxoSmithKline's motion for a TRO/preliminary injunction will be held, as scheduled, on October 26th. The PTO had first agreed to this hearing date, but, after seeing GSK's arguments, wanted a delay, apparently unable to defend the legal validity of its own Rules. More specifically, the DOJ complained that it was overwhelmed by the papers filed by GSK, a private party. As it is, the Rule changes were deliberately written, in 129-page maze in the Federal Register, in a manner that made it difficult for any sane person to understand and thereby challenge. With the PTO's "flagged" status today, it would seem that most patent attorneys now have at least one client with "standing" to challenge at least a portion of the Rule changes.

I would be very surprised if the PTO's Rule changes actually went into effect November 1, 2007, notwithstanding the arrogant pronoucement on its home page that the Rule changes for continuations and claims "will take effect" on November 1. I expect that either the District Court or CAFC will act to prevent the train from being wrecked!

(Reply to this) (Parent)(Thread)(Expand)

Re: Two questions... - (Anonymous), 2007-10-17 08:26 pm UTC (Expand)
Re: Two questions... - (Anonymous), 2007-10-17 10:50 pm UTC (Expand)
Re: Two questions... - (Anonymous), 2007-10-18 01:30 am UTC (Expand)
Re: Two questions... - (Anonymous), 2007-10-17 08:32 pm UTC (Expand)
Re: Two questions... - (Anonymous), 2007-10-17 08:48 pm UTC (Expand)
flags pulled
[info]humbleagent
2007-10-17 08:19 pm UTC (link)
Based on my docket, it looks like the 5/25 flags have been pulled and everything is back to normal.

(Reply to this) (Thread)

Re: flags pulled
(Anonymous)
2007-10-17 08:52 pm UTC (link)
I still haven't got my case back...

(Reply to this) (Parent)(Thread)(Expand)

Re: flags pulled - (Anonymous), 2007-10-18 02:12 am UTC (Expand)
rebuttals under 37 CFR 1.78(f)(2)(ii)(A)
[info]humbleagent
2007-10-19 01:06 pm UTC (link)
A slightly off topic question.

As indicated above, it’s not uncommon in the biotech arts to file an initial provisional application covering a broad new class of drugs and then subsequently file a relatively large number of nonprovisinal child applications covering various promising species of that class. A single provisional, for example, might have over 100 nonprovisional child applications pending at any given time.

On or before Feb 3, 2008, many of the applicants who have filed these applications will be filing statements under 1.78(f)(2)(ii)(A) rebutting the presumption that at least some of the copending applications have patentably indistinct claims. The applicants might, for example, list limitations in each of the independent claims of a given application that are not found in any of the other independent claims of the copending applications. They might also provide a list of the limitations in each of the independent claims of the copending applications that are not found in the independent claims of said given application.

My question is this. Suppose the applicant makes an error in good faith and one of the independent claims is NOT patentably distinct from one of the independent claims in the copending applications. How long might it take for an examiner to find the error?

(Reply to this) (Thread)

Re: rebuttals under 37 CFR 1.78(f)(2)(ii)(A)
(Anonymous)
2007-10-19 02:00 pm UTC (link)
well first said copending application would have to get in front of an examiner... Not all of those applications will necessarily have gotten around to being docketed yet... Assuming said copending application is being examined by an examiner, double patenting in copending applications should be one of the first things an examiner looks for. SHOULD be... if you have a thorough examiner and not one who is either lazy or just plain tired and just skips right to the prior art search...

Then there's always the possibility that the examiner will see an interpretation of the claims that DOES render them patentably distinct, and will never raise the issue with you....

-MM

(Reply to this) (Parent)(Thread)(Expand)

Re: rebuttals under 37 CFR 1.78(f)(2)(ii)(A) - (Anonymous), 2007-10-19 02:02 pm UTC (Expand)
Re: rebuttals under 37 CFR 1.78(f)(2)(ii)(A) - [info]humbleagent, 2007-10-19 02:40 pm UTC (Expand)
Re: rebuttals under 37 CFR 1.78(f)(2)(ii)(A) - (Anonymous), 2007-10-19 09:45 pm UTC (Expand)
Re: rebuttals under 37 CFR 1.78(f)(2)(ii)(A) - (Anonymous), 2007-10-19 09:48 pm UTC (Expand)
Re: rebuttals under 37 CFR 1.78(f)(2)(ii)(A) - (Anonymous), 2007-10-19 10:45 pm UTC (Expand)
Re: rebuttals under 37 CFR 1.78(f)(2)(ii)(A) - [info]humbleagent, 2007-10-20 12:14 pm UTC (Expand)
Re: rebuttals under 37 CFR 1.78(f)(2)(ii)(A) - (Anonymous), 2007-10-20 08:09 pm UTC (Expand)

(Anonymous)
2007-10-20 03:03 pm UTC (link)
About freaking time. This will limit the bs claims on colors, sizes, shapes, well known limitations etc.

25 claims is still to much. 10 claims is more than enough.

Finally PTO management does something right.

(Reply to this) (Thread)

"25 claims is still to much."
(Anonymous)
2007-10-20 04:32 pm UTC (link)
Thanks for that knowledgeable and reasoned reply... you stand next in line to be Director for the Bush Administration (well, after Ms. Peterlin). Or were you looking for something higher up? (We have openings in the Justice Department.)

(Reply to this) (Parent)(Thread)(Expand)

Re: "10 claims is still to much." - (Anonymous), 2007-10-20 08:31 pm UTC (Expand)
Re: "4 1/2 claims is still to much?" - (Anonymous), 2007-10-21 01:05 am UTC (Expand)
Re: "25 claims is still to much." - (Anonymous), 2007-10-21 11:01 am UTC (Expand)
Re: "25 ad hom slams not enough" - (Anonymous), 2007-10-21 01:43 pm UTC (Expand)
Re: "25 claims is still to much." - (Anonymous), 2007-10-21 04:54 pm UTC (Expand)
Examiner Core dwindling . . .
(Anonymous)
2007-10-21 12:50 pm UTC (link)
Do posts here get axed if the post is critical of Examiners?

The problem with the System is that it flushes out Examiners who have pride and who want to have a job where they actually examine inventions.

What is left is a bunch of used car salesmen types who, by necessity, will do anything to get counts. It's all about chasing counts.

Force the restriction, force the RCE, and so on.

Because the system is set up so that the only people who can survive are those who don't care a wit about the quality of patents, what you end up with - surprise - is a an Examination core that is mostly Examiners who are chasing counts to the exclusion of all else.

By the way, I think Examiners are underpaid.

I also don't know how long a search takes, but I know for sure that, of the 1,000 or so Office Actions I have received in my career, I could have prepped most of them in less than 4 hours.

(Reply to this) (Thread)(Expand)

Re: Examiner Core dwindling . . .
(Anonymous)
2007-10-21 01:46 pm UTC (link)
Back around 1995 I was warned by an elder examiner that this was going to happen. The older troopers were WW II vets who tried to do a good job at the USPTO out of a sense of patriotism. 1945 + 40= 1995 was when the last of them retired en mass. Since then we've had nothing but count chasers.

(Reply to this) (Parent)(Thread)(Expand)

Re: Examiner Core dwindling . . . - (Anonymous), 2007-10-21 07:45 pm UTC (Expand)
Re: Examiner Core dwindling . . . - (Anonymous), 2007-10-21 10:54 pm UTC (Expand)
Re: Examiner Core dwindling . . . - (Anonymous), 2007-10-21 11:21 pm UTC (Expand)
Re: Examiner Core dwindling . . . - [info]just_n_examiner, 2007-10-21 08:09 pm UTC (Expand)
Re: Examiner Core dwindling . . . - (Anonymous), 2007-10-21 11:23 pm UTC (Expand)

(Anonymous)
2007-10-25 12:06 pm UTC (link)
What happens if a restriction is done on an older case and applicant elects more than 25 claims?

(Reply to this) (Thread)


(Anonymous)
2007-10-26 01:14 am UTC (link)
Applicant will have to submit an ESD or cancel claims to bring them under 5/25. Better file for a claim fee refund, too.

(Reply to this) (Parent)

I'm not sleazy
(Anonymous)
2007-10-27 07:32 am UTC (link)
This may sound simplistic, but I think that giving examiners more time might also reduce a lot of the animosity between attorneys and examiners that we've seen on this board. As a relatively new examiner (2+ years) I work hard, take pride in my work, and having trouble relating to horror stories about crap Office actions. It's not that I disbelieve them, but that just isn't me. I do damn good work in the time that I'm given. However, my workload is simply not reasonable. I know it looks to the outside like examiners are picky, lazy bureaucrats, but when I've put in my 40 hours and then some, and I'm faced with the choice of spending another weekend at Carlyle or at home with my family---yes, I'm going to cut corners wherever I can. And frankly, any rational person would do the same. "Sleazy" stuff that examiners do is not the problem, it's just symptomatic of the larger problem of NOT ENOUGH TIME.

(Reply to this)

Idetrorce
(Anonymous)
2007-12-15 12:48 pm UTC (link)
very interesting, but I don't agree with you
Idetrorce

(Reply to this)


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