Friday, May 18, 2012

Applicant is granted petition to stop Examiner from reopening prosecution, but Examiner ignores decision

Takeaway: An Applicant pursued an appeal, only to have the Examiner reopen prosecution not once, but twice. After the second reopening, the Applicant filed a petition requesting that the Examiner be ordered to respond with an Answer. The petition was granted, but the Examiner ignored it and reopened prosecution a third time. The Applicant petitioned again, the petition was granted, and this time the case went on to appeal. Three years after the Applicant filed the first Appeal Brief, the Board reached a decision that affirmed some rejections and reversed others. (Appl. 10/419,934, available through Public PAIR.)

Application of Torris
Appl. No. 10/419,934
Technology Center 3700

An Applicant filed a medical device application with claims directed to a needle assembly and methods of assembly. On the first Final Office Action, the Applicant filed a Notice of Appeal and Pre-Appeal Conference Request. In response, the Examiner reopened prosecution with a Non-Final Office Action and a new ground of rejection. The Examiner switched to from obviousness to anticipation (using the same base reference) and explained his claim interpretation.

The Applicant amended claims to distinguish ("neck adaptable to fixed retain a needle hub"), and the Examiner maintained the anticipation rejection in a Final Office Action. The Examiner explained that the reference was "capable of adapting (of becoming or being made suitable) to a particular situation or use."

The Applicant filed a Notice of Appeal, simultaneously filing an Appeal Brief. The Examiner reopened prosecution again with another Non-Final Office Action that included the same rejections. The Office Action indicated that prosecution was reopened in order to "greater explain Examiner's claim interpretation and rejection."

The Applicant filed another Appeal Brief to reinstate the appeal, along with a Petition to the Director under 1.181(a)(3) ("supervisory authority"). The Petition requested "the Group Director to order the examiner to respond with an Examiner's Answer so that this case may be forwarded to the Board of Appeals for adjudication" in light of the facts presented with the Petition. The Applicant then briefly laid out the prosecution history.

The Petition was granted in less than three weeks. The Petition Decision noted that the record showed "a prolonged prosecution in this case" and that the Examiner had reopened prosecution twice. The Petition instructed the Examiner "to timely set up an appeal conference" and "to conclude the examination of the application as soon as possible." The Petition forwarded the application to the SPE for consideration of Appeal Brief. The Petition indicated that the Applicant should direct any inquiry about the decision to a designated Special Programs Examiner.

The Examiner then reopened prosecution again. In another Non-Final Rejection, the Examiner indicated that prosecution was reopened "to place a new prior art rejection on the claims." In this case, another anticipation rejection, but using a different reference.

The Applicant responded by filing an Appeal Brief to reinstate the appeal, and another 1.181(a)(3) Petition. The Petition again requested the Group Director to order the examiner to respond with an with an Answer and to forward the case to the BPAI. Once again, the petition laid out the facts of the prosecution history.

In less than 30 days, the Director granted the second Petition. The Petition Decision repeated much of the same language before about prosecution being prolonged and reopened multiple times. The Petition once again instructed the Examiner "to timely set up an appeal conference". This time, the Petition specifically gave the Examiner a time limit, instructing him to "conclude the examination within three months of the date of the filing of the Appeal Brief."

This time the Examiner complied, mailing an Examiner's Answer within 15 days of the second petition. The Applicant did not file a Reply Brief.

The BPAI issued a decision almost two years after the Answer, affirming some rejections and reversing others. The Applicant took the allowable claims. The patent issued about 6 months after the appeal decision.

My two cents: I'm impressed that the Applicant went to the trouble of filing a petition. I'm also encouraged that the Petition office responded so quickly. And of course annoyed that the Examiner ignored the first petition decision.

Interesting that the Director characterized this as "prolonged prosecution". I've seen a lot worse, in my own cases and in others I blog about. My personal record for seeing reopened prosecution is four times: after my fourth appeal brief, the Examiner finally sent a Notice of Allowance. Endless rounds of non-final Office Actions is another a form of prolonged prosecution which I see from time to time. 

This sort of petition is not a lot of money, in fees or in attorney time. But there is a cost. And it doesn't stop the clock, so you have to pursue the appeal at the same time. And based on other types of petitions I've seen, the petition process is rarely useful because the decision usually doesn't come in time.

Still, a petition feels right on principle. If the finality of an Office Action is improper, you have to give in or petition. Same with refusal to enter evidence/amendment, restrictions, drawing objections, and a host of other improper Examiner actions. If you never fight these things, then it stands to reason that Examiners will keep doing them.


  1. Was this a Primary Examiner? They are the only ones who usually feel they can ignore a SPE or Group Director. If I had been the Group Director, I would have had a face-to-face with the Examiner and his/her SPE.The Examiner would probably demand his POPA rep be there as well.
    What good are petitions if they can be ignored with impunity?

  2. ExaminerName: GRAY PHILLIP A
    GroupArtUnit: 3767
    AllowanceRate: 0.426
    AverageTimeToPatent: 1433
    NumberOfCasesAppealed: 17
    FinalRejectionsPerPatentedCase: 2.00

    He's an Assistant Examiner with about 109 issued patents.

  3. Probably just a clueless junior. Might not have even noticed the petition decision. First time I saw one it didn't stick out to me in edan. There is no star or indicator in edan that a petition decision has come down and if you're in a hurry and not particularly looking at each individual document you may very well skip looking at it. And you certainly don't get a hard copy of it like you probably used to.

  4. Gray's been appealed a lot for someone who's not even a primary yet. He's emblematic of the type of Examiner who started working at the PTO during the previous administration.

    Ex Parte Gellman 10/062,357 March 2012
    Ex Parte Gesswein 10/394,630 June 2010

    Ex Parte Tucker 11/012,824 June 2011

    Anyone ever cite an Examiner's reversal at the BPAI in another case against them during prosecution when the Examiner is engaging in the same type of conduct they were reverseed for in the other matter?

  5. The attorney authorized payment of $130 for (at least) the first petition. But 1.181 petitions have no fee, right? I don't know why he authorized the $130.

  6. Something I noticed is that Gray's SPE is Kevin Sirmons. I happened to recall him to be the SPE of that one patent examiner that got arrested and put on trial for time fraud (eventually acquitted).

    From April/May 2007 POPA newsletter:
    "Difficulties with new supervisor Kevin Sirmons began the first biweek after he took over her art unit in October 2005. Sirmons was often away from his office during that time. As previous supervisors had authorized and without any indication to the contrary from
    Sirmons, the examiner had a senior primary examiner review and sign applications in Sirmons’ absence and submitted them for production credit. Sirmons held them
    until “count Monday,” the submission deadline day when, without a word to the examiner, he left them in her office with the primary examiner’s approving signature crossed
    out. She, as a result, had abysmally low production that biweek. He told her he was upset she had gone to the primary examiner and that, on his watch, everything had to
    go through him."

    I don't know the guy and am not in that area, but with that kind of ego/personality, I'd wouldn't be surprised if he was a big part of the problem with this case.

  7. SPEs signing OAs with very little actual supervision does contribute to the problem. This type of SPE flourished under the previous regime.

  8. Given that he's not a primary, this is not likely the examiner's fault. It's most likely a result of a SPE that forces the examiner to reopen rather than go to the board for fear of having a bad reversal percentage, and yet still has the everything-is-obvious mentality so won't allow anything.

    "Interesting that the Director characterized this as "prolonged prosecution"."

    You are aware that with very rare exception, the Directors are NEVER the ones that look at these right?

  9. I think things would improve greatly if Examiners lost 10 counts for every appeal lthey lose at the PTO, and that includes when they are only "affirmed-in-part." That'll get allowances up. In situations like this, they should lose 2 workflow points where they have delayed prosecution. But POPA will never allow it to happen.

  10. "That'll get allowances up."

    If you just want to get allowances up there are easier ways that don't involve ludicrous amounts of people quitting the job when they lose the rough equivalent of 3 mo. work.

  11. Quit and do what? Examining is still a pretty cush job these days for the pay, benefits and job security.

    When examiners screw up, it costs clients a lot of money. Making examiners feel a little pain for their screwups would result in fewer screwups.

  12. "When examiners screw up, it costs clients a lot of money. "

    Nobody is making them file an application, or prosecute it.

  13. "Nobody is making them file an application, or prosecute it."

    But when they do, they expect and deserve competence!

  14. "But when they do, they expect and deserve competence!"

    That is a matter of opinion. Plainly they're not paying for competence, so I wouldn't say they deserve it. Now, should the office management get its way and allow applicants to pay what it would cost to deliver a competent examination then we will be in agreement.

  15. "That is a matter of opinion"

    It's fact, not opinion. When you have your appendix removed by a surgeon, you expect and deserve competence! Examiners call themselves professionals so they need to start acting like professionals.

  16. Patent examination is not appendix surgery. Sorry. Note also that in appendix surgery you pay a premium for the competence. You're not paying that for your patent examination.

  17. "You're not paying that for your patent examination."

    That may very well be the reality but it's not what's advertised. So, since patent applicants are not getting what they pay for, fees should be refunded and patent examiner salaries cut to reflect their lack of competence.

  18. "That may very well be the reality but it's not what's advertised. "

    Then sue us for false advertising. In VA you can get 500$ statutory damages.

  19. "So, since patent applicants are not getting what they pay for, fees should be refunded and patent examiner salaries cut to reflect their lack of competence."

    I think you meant to say since they're not getting what was advertised. Because they're certainly getting what they pay for. Which is the whole point ya dumar se.

  20. "Then sue us for false advertising. In VA you can get 500$ statutory damages."

    Apparently, you don't realize that the USPTO is part of the federal government. What passes for statutory damages in VA is irrelevant. Thanks for demonstrating your ignorance.

  21. "Apparently, you don't realize that the USPTO is part of the federal government."

    Apparently I don't realize that I work for the federal gov? You tard, I know very well where my paycheck comes from, indeed, the very dept.

    I mentioned VA because that is where the PTO does its business. If you can't sue them under state laws or if they have a special government shield that shields them then fine, figure out your own way.

  22. "figure out your own way."

    Without a doubt. Heaven help anyone relying on your "knowledge."

  23. A previous poster stated:

    "ExaminerName: GRAY PHILLIP A
    GroupArtUnit: 3767
    AllowanceRate: 0.426
    AverageTimeToPatent: 1433
    NumberOfCasesAppealed: 17
    FinalRejectionsPerPatentedCase: 2.00"

    Can anyone direct me to the source of this very useful data?


    1. They probably got it from the new Patent data mining system they were advertising on ipwatchdog. You can inquire about it over there.