Why so difficult?

The United States Patent and Trademark Office, as of the end of FY 2017, had 8,147 patent examiners according to the PERFORMANCE & ACCOUNTABILITY REPORT. In my experience, a very large percentage of those examiners try their best to provide a fair examination - applying the rules and case law in a consistent and reasonable way.

But there are pockets of examiners that, unfortunately, do not follow the rules and are determined to reject. They employ numerous tactics in an attempt to wear down applicants and convince them to simply give up. It is important to recognize these tactics so that early action can be taken to minimize the damage cause by such examiners. Unfortunately, the USPTO currently tolerates (and perhaps even encourages) such tactics. It remains to be seen whether the new director will address any of these abuses.

Tactic #1 - Improper and/or Excessive Restrictions

Surely there are claim sets that require restriction. The Office as a whole is relatively restriction-prone (with some art mechanical art units as high as 50% on average), but some examiners take it to another level. When an Examiner restricts 75% of cases on their docket, for example, while the average in their unit is well below 50%, this should raise a red flag to the quality review professionals within the Office. It should also be a red flag to applicants if they draw a restriction-prone examiner as it could indicate the examiner is using the restriction to not only increase the applicant's costs, but to limit their ability to amend during prosecution (see a previous post on this point).

Tactic #2 - Asking Inane Questions

Another tactic used by examiners intent on rejecting is to make the applicant dance, so to speak. They try to create confusion and ask unanswerable and irrelevant questions. They invent contradictions when none exist. They try to get the applicant to meet an impossible level of specificity and clarity, and there is no end it. Sowing the seeds of confusion is their goal with the hope of wasting multiple office actions and RCEs without ever really getting to the substantive issues or completing an appropriate search. The downside for the examiner is low - even if the applicant eventually appeals and wins, then they will simply reopen prosecution at that point and start the "real" search and examination.

Tactic #3 - Never-ending Prior Art

A good examination starts with a good search. Unscrupulous examiners have learned, however, that they benefit greatly from poor searching. For example, an examiner can make a poor search and a poor rejection (with little time invested), and some applicants will nevertheless amend in the hopes of being reasonable and compromising with the examiner. However, examiners bent on rejections simply do more searching and make further rejections. This goes on and on. Since the examiner is not really concerned with performing a good examination, it is easy to constantly find more references and make new rejections with the hope that eventually they will find the right combination of prior art that will stand up on appeal, or the applicant will simply give up.

There are many more tell-tale signs, but we will leave those for another day and another post. In the remainder of today's post, a quick example is provided of how to handle some of these shenanigans. In this example, the invention is a fuel control system owned by Denso (sn 12/766,030). This case is a real doozy. Of course it had a questionable restriction, but the focus here is on the subsequent appeal.

The invention relates to a fuel pressure controller for a direct injection engine having both a high-pressure pump and a low-pressure pump. Such fuel systems are becoming ubiquitous in modern vehicles as the direct injection system allows improved fuel economy and more accurate fuel injection control in order to lower exhaust emissions.

The Denso invention provided a learning means for performing the low pressure fuel pump control when the high pressure pump stops discharging fuel. The Examiner complained that the claim was not clear by purposely confusing the set-point pressure with the actual pressure. The claim was quite clear on this point, referring to the situation where the target low fuel pressure is set to a specified value. In such a case, the system corrected the control so that fuel pressure in the low pressure fuel passage was increased from a value lower than the specified value. The examiner contended that:

clarity 1.png

If this was not enough of a red herring, the Answer went on further:

clarity 2.png

The applicant had the good sense to appeal straight away without wasting more time and effort. This was especially true as the examiner effectively failed to perform a proper examination under Sections 102/103 alleging that such an examination was not possible due to the (contrived) lack of clarity.

The board disposed of the appeal quickly and succinctly, noting that:

board 1.png

Continuing with the improper 103 rejection, the Board explained that they will not sustain rejections where the Examiner has not addressed explicit claim limitations by providing a citation to a reference that teaches the claim limitations. Merely relying on alleged claim inconsistencies does not render an applicant's argument that the rejection is improper moot. The Board concluded with an admonishment as follows:

board 2.png

So, the next time an examiner's actions or statistics indicate prosecution will be difficult, do not let them lead you down the primrose path. Develop a strategy early in prosecution like Denso and hunker down. Maybe some day the USPTO management will use the data they already have at their fingertips to cut down the wasted effort and unneeded expense caused by these pockets of examiners operating well outside the norm.